Recap of Emotional Perception AI v. Comptroller-General of Patent, Designs and Trade Marks [2023]

Appeal at High Court of England and Wales

 

• The decision of the UKIPO was appealed by Emotional Perception AI at the High Court (EWHC 2948) and the judgement was handed down in November 2023.
• The Judge structured the judgement by first considering three questions:   

 

1. “Where is the computer for the purposes of the exclusion?”

The Judge considered that in the case of a hardware ANN, the ANN is the computer and in the case of an emulated ANN, the computer is the thing that the ANN is run on.

 

2. “Where is the program?”

In the case of a hardware ANN, the UKIPO conceded that there is no computer program. Whilst for an emulated ANN, the Judge considered that the ANN can be decoupled from the underlying software on the computer and therefore the ANN is not a program for a computer.

 

3. “Is the invention a claim to a computer program at all?”

The Judge considered that the claims do not seem to claim the program involved in the training stage of the ANN, but rather claim the trained ANN. With regards to technical effect, the Judge considered that “What is considered special is using pairs of files for training, and setting the training objective and parameters accordingly. [Therefore,] the actual program is a subsidiary part of the claim and not what is claimed.”

 

• On answering the above three questions, the Judge concluded that the claim is not to a computer program at all and therefore the exclusion is not invoked.
• The Judge went on to check the above conclusion by assuming that the invention is excluded from patentability and used the four-step Aerotel test to assess the technical contribution of the invention.
• The Judge considered that sending an improved recommendation message, such as a music file recommendation, is a relevant technical effect and prevented the exclusion from applying.
• Additionally, the Judge considered that as a result of the invention a file has been identified and moved because it fulfilled certain criteria. Therefore, it is not just any old file; it is a file identified as being semantically similar by the application of technical criteria which that system has worked out for itself. So, the output is of a file that would not otherwise be selected. The possible subjective effect on the user was not considered relevant.
• The appeal was allowed.
• Following the High Court appeal, a change was made in UKIPO practice regarding ANNs and the program for a computer exclusion and patent examiners were told not to object to inventions involving ANNs under the “program for a computer” exclusion.

 

Appeal at Court of Appeal

 

• The decision of the UK High Court was appealed at the Court of Appeal by the Comptroller-General and heard in May 2024.

 

We are expecting the judgement from the Court of Appeal to be handed down imminently - stay tuned for the details!

 

References

^[1] Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application [2006] EWCA Civ 1371; [2007] RPC 7